X/Open Company Limited v. Unix10 Host / Unix10.Com
Claim Number: FA1509001637856
Complainant is X/Open Company Limited (“Complainant”), represented by Mark Sommers of Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P., Washington, D.C., USA. Respondent is Unix10 Host / Unix10.Com (“Respondent”), Jordan.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain name at issue is <unix10.com>, <unix10.info>, <unix10.net> and <unix10.org>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 15, 2015; the Forum received payment on September 15, 2015.
On September 17, 2015, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <unix10.com>, <unix10.info>, <unix10.net> and <unix10.org> domain names are registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the names. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 17, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 7, 2015 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@unix10.com, postmaster@unix10.info, postmaster@unix10.net, postmaster@unix10.org. Also on September 17, 2015, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
On October 7, Respondent requested a 20 extension of time to file a Response. The Forum allowed that extension of time to October 27, 2015. Having received no further response from Respondent by October 27, 2015, the Forum transmitted to the parties a Notification of Respondent Default.
On October 30, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons as Panelist.
After appointment of the Panel, Respondent made a submission to the Forum which is considered below by the Panel.
Complainant requests that the domain names be transferred from Respondent to Complainant.
Complainant asserts trademark rights in UNIX and alleges that the disputed domain names are confusingly similar to the trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant alleges that Respondent registered and intends to use the disputed domain names in bad faith.
B. Respondent
Respondent failed to submit a timely Response.
The factual findings pertinent to the decision in this case are that:
1. Complainant uses the trademark UNIX in connection with a computer operating system;
2. the trademark is the subject of United States Patent and Trademark Office ("USPTO") Reg. 1,390,593, from May 13, 1985;
3. the disputed domain names were registered over a period from 2005 to 2012;
4. the disputed domain names are either not in use or resolve to a website with links to competitors of Complainant; and
5. Complainant has not authorized Respondent to use the trademark or to register any domain name incorporating the trademark.
As indicated, Respondent made an out of time submission which might be construed as a Response. A 20 day extension of time to file a Response was requested and given. Reasons given to support that extension were that Respondent is “not from the USA , and I don't know the procedures for this issue” and that “I don't know any lawyer to help me with this and this is very short time for me to find one.” The later out of time “response” stated that “we do not know the English language sufficiently and the lack of adequate public relations enable me to hire a lawyer”.
There is evidence that Respondent has been engaged in other UDRP proceedings (see Yahoo! Inc. v. Unix10.Com / Unix10 Host, FA1514758
(Nat. Arb. Forum Sept. 12, 2013)). The Forum’s website and officers assist self-represented parties. The (extended) time to allow for a Response was more than adequate. Panel has determined in this case not to take that submission into account.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – an investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights. Since Complainant provides evidence of its USPTO registration for the trademark UNIX the Panel is satisfied that it has trademark rights in that term (see State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Nat. Arb. Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”); see also Mothers Against Drunk Driving v. phix, FA 174052 (Nat. Arb. Forum Sept. 25, 2003) finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant’s rights in the mark for purposes of Policy paragraph 4(a)(i)).
Each of the disputed domain names contains Complainant’s trademark and adds the number “10,” plus one of the gTLDs “.com,” “.info,” “.org,: or “.net”. Panel finds each of them confusingly similar to the trademark (see Microsoft Corp. v. Tran Van Thong, FA1533611 (Nat. Arb. Forum Jan. 9, 2014) finding <microsoft247.com> confusingly similar to complainant’s MICROSOFT mark
because “adding numbers and gTLDs to a Complainant’s mark does not overcome a finding of confusingly similar under Policy ¶ 4(a)(i)”; see Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
Complainant has therefore established the first element of the Policy.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000).
The WHOIS information lists “Unix10 Host / Unix10.Com” as the registrant of record for the disputed domain names. Accordingly there is no evidence to indicate that Respondent might be known by any of the domain names. There is no evidence that Respondent has any trademark rights. Complainant provides evidence that the disputed domain names are either not in use or used to redirect Internet users to a webpage featuring competitive computer operating systems. Such use cannot amount to a bona fide offering or a legitimate noncommercial or fair use (see Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”; see also George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name).
Panel finds that Complainant has established prima facie cases and so the onus shifts to Respondent to establish a legitimate interest in the domain names. Those cases are not met and so Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied the second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain names were registered and used in bad faith. Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
‘(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.’
Panel finds that Respondent’s conduct is caught by subparagraph 4(b)(ii). In addition to the multiple domain name registrations here, Respondent was subjected to an adverse UDRP decision in Yahoo! Inc. v. Unix10.Com / Unix10 Host, FA1514758 (Nat. Arb. Forum Sept. 12, 2013). Past panels have found that having registered multiple infringing domain names in the current proceeding, as well as prior adverse UDRP decisions, are evidence of bad faith under this aspect of the Policy (see Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000); Liberty Mut. Ins. Co. v. Bin g Glu, FA 1036129 (Nat. Arb. Forum Sept. 2, 2007); EPA European Pressphoto Agency B.V. v. Wilson, D2004-1012 (WIPO Feb. 9, 2005).
Panel therefore finds registration and use in bad faith under paragraph 4(b)(ii) and so finds that Complainant has established the third and final aspect of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, and in accordance with Complainant’s request, it is Ordered that the <unix10.com>, <unix10.info>, <unix10.net> and <unix10.org> domain names be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Dated: November 4, 2015
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